1. What is a PCT patent application?
A patent application under the regulations of the “Treaty on international cooperation in the field of intellectual property rights” (Patent Cooperation Treaty) is called a PCT application or international patent application. Such a PCT application does not result in international patent, but it is merely a patent application including a later option for national applications in selected countries which are to be selected by the applicant (e.g. Germany, USA, China or Japan). After a period of 30/31 months, national applications have to be filed with each of the selected countries. The national applications will then be individually examined by the national patent offices for novelty and inventive step. If a national application meets the requirements of patentability, a national patent is granted by the respective patent office.
A PCT application offers the possibility to obtain patent protection in multiple selected PCT Contracting States by means of a single application. “Selected contracting states” means that a national phase is entered in this country, which comprises filing a translation in the national language and payment of fees. An overview of the deadlines for entering the national phases is available at the WIPO website.
The principal advantage of a PCT application is that the applicant may decide until a relatively late stage of his application (usually until about 2½ years), where he wants to obtain national protection for his invention. Thus, the high costs in connection with national applications occur at a relatively late stage. At this point of time, the WIPO has already issued an opinion on the patentability of the application so that the chances of grant can be estimated quite well. In addition, it is usually clear after 2½ years whether the protected product/process will be commercially successful or not.
Generally, all countries may be selected which have acceded to the Patent Cooperation Treaty. Since May 28th 2007 there are 137 PCT member states. For more info, please ask one of our German patent attorneys.
2. How do I apply for a PCT patent application?
An international patent application may be submitted to the European Patent Office in Munich (EPO). For European applicants, the European Patent Office is the International Searching Authority (ISA).
The documents of the patent application must include: A description, claims, drawings (optional) and a summary. In addition, an inventor’s designation must be filed. Further information may be found on the website of the WIPO.
3. What happens after filing?
After filing the application, the EPO checks the formal requirements and then conducts an international search for relevant prior art. The international search report comprises the classification of the invention and cites those prior art documents that are regarded as essential for the invention. Together with the international search report, the EPO issues a written opinion on patentability including a statement whether the claimed invention is new, involves an inventive step and is susceptible of industrial application. If the EPO finds that the international application does not meet the requirements of unity of invention, the applicant is required to pay additional search fees.
Upon receipt of the international search report, the applicant may amend the claims once (Article 19 PCT). In this case he has to submit a new set of claims, explain the difference and specify the basis for the changes to the WIPO.
Depending on the results of the international search report, the applicant may finally decide if, or in which countries, he wants to enter into the national phases, which are then examined by the respective patent offices.
Please do not hesitate to contact us in case of questions about the PCT proceedings. Our German and European Patent Attorneys in Munich will be pleased to advise you. Please feel free to contact us.
4. How much does a PCT patent application cost?
A PCT patent application incurs additional costs in the international phase before the EPO comprising official fees and charges. These costs would not have occurred, if national applications had been filed directly with the patent offices of the desired countries. However, a PCT application provides some advantages (see above) which compensates the additional costs by far.
For details on the cost of a PCT patent you may find more information on our website in the menu patent costs.
If you have any questions about the PCT patent application or questions about the nationalization of a PCT patent application, we are pleased to advise you. Please feel free to call one of our German and European Patent Attorneys in Munich.